Should the invalidation procedure be suspended for property preservation of patent rights that have been executed?

Text: Du Yangyang

Usually, when a patent right is subject to property preservation, the patent office will suspend the patent related procedures. The scope of suspension includes (see Section 7.2 of Chapter 7 of Part 5 of the Patent Examination Guidelines):

(1) Suspend the preliminary examination, substantive examination, reexamination, grant of patent rights, and invalidation procedures of patent applications;

(2) Suspend procedures such as deemed withdrawal of patent application, deemed abandonment of obtaining patent rights, termination of patent rights without payment of annual fees, etc;

(3) Suspend the procedures for withdrawing patent applications, waiving patent rights, changing the name of the applicant (or patentee), transferring patent application rights (or patent rights), and registering patent pledge.

It can be seen that when a patent is subject to property preservation, it will have an impact on the invalidation procedure of the patent right, directly leading to the suspension of the invalidation procedure of the patent right.

The Patent Examination Guidelines also stipulate the suspension period for invalidation procedures (see Section 7.4.2 of Chapter 7 of Part 5 of the Patent Examination Guidelines):

If the People's Court requests the Patent Office to assist in the execution of property preservation and suspends the procedure, the relevant procedures shall be suspended according to the property preservation period specified in the civil ruling and the notice of assistance in execution. If the people's court requests to continue taking property preservation measures, the notice of assistance in execution for continued preservation shall be delivered to the Patent Office before the expiration of the suspension period. If it meets the requirements of Section 7.3.2.1 of this chapter after review, the suspension period shall be extended.

From the above provisions, it can be seen that the measures taken by the Patent Office to assist in the execution of property preservation and the suspension of procedures requested by the People's Court are fully cooperative.

The initial purpose of this regulation was to prevent patent owners from maliciously disposing of their patent rights, thereby damaging the rights of one party involved in property preservation cases. However, in most current cases, the reason for the invalidation requester to file an invalidation request is related to patent infringement, and filing an invalidation request is one of the legitimate countermeasures taken. If the invalidation procedure is suspended, it is likely to have an impact on the rights of the invalidation requester, causing the invalidation procedure to have no substantive effect after being initiated. This not only deprives the invalidation requester of a right to exercise and a means of counterattack against the patent owner, but also unreasonably consumes their time and economic costs. Moreover, in most cases, the person requesting invalidation did not participate in the property preservation case, which makes the person requesting invalidation even more innocent.

Therefore, based on the above reasons, the author believes that when determining whether the invalidation procedure is suspended by the property preservation of the patent, the interests of the invalidation requester should be weighed, and invalidation requesters who are not parties to the property preservation and have patent infringement disputes with the patent owner should be excluded from the scope of suspension. This ensures that invalidation requesters who are not related to property preservation or malicious disposal of their patent rights by the patent owner can exercise their rights through legitimate means without being affected, in order to achieve fairness and justice in the procedure.